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EU Trademark Reform Paves the Way for Non-Conventional Trademarks

28.01.2016

The first steps to revise and modernise the EU trademark system were taken already in 2007. In December 2015, after some ifs and buts, Directive 2015/2436/EU on the harmonization of national trademark laws and Regulation 2015/2424/EU on Community/EU trademarks were published. An overview of some of the key changes follows, but before going deeper into substance it should be noted that Community trademarks or CTMs will from now on be called European Union trademarks or EUTMs, and the Office for Harmonization in the Internal Market (more commonly known as OHIM) will become the European Union Intellectual Property Office (EUIPO).

No requirement of graphical representation one of the most important changes of the reform. Under current EU law, a requirement for national and Community trademark registration is that the mark can be graphically represented. Following the reform, this is no longer the case, as long as the trademark “enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”

It’s a fact that companies do not only appeal to consumers’ sense of sight when distinguishing themselves and their products and services on the market – sound, smell, taste and touch are also important for brands. The removal of the graphical representation requirement is part of the modernisation of the application procedure and will simplify the registration of non-conventional marks. For example, the graphical representation of sound marks has long been under debate: Is sheet music required? Can sonograms be accepted? Should they be accompanied by a sound file?

Registering a sound, smell or taste is still not uncomplicated – the mark has to be distinctive, other trademark applicants should be able to do trademark searches among existing trademarks, etc. – but the new requirement will indisputably bring more flexibility to the application procedure and allow for more extensive use of technological means.

Literal interpretation of registered goods and services. In the so-called “IP translation” case of the Court of Justice of the European Union (C-307/10), the Court found that the established practice of listing Nice class headings to claim protection for all goods and services in that class, was not sufficient – all goods and services must be clearly identified. This principle is now codified in the new regulation and directive, according to which goods and services “shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.” In other words, trademark applicants’ lists of goods and services will be interpreted literally and must therefore be assigned thorough thought.

Following the new regulation, everyone having registered a Community/EU trademark before 22 June 2012 – the date when the IP translation ruling was handed down – should pay extra attention to their registrations. If they have used class headings, they may up until 24 September 2016 file a declaration with the EUIPO, stating that their intention was to seek protection in respect of goods or services beyond those covered by the literal interpretation of the class heading.

It is important to note, however, that the protection following the declaration is not retrospective. If the register is amended, the proprietor of an EU trademark cannot, for example, prevent a third party from continuing to use a trademark, if the use commenced before the register was amended and did not infringe the proprietor's rights based on the literal interpretation of the class heading.

Application and fees. Overall, the costs payable to the EUIPO for EUTMs will decrease, but there will also be a shift from the current “three-class-system” to a “pay-per-class-system”. Following the new regulation, the basic fee for an EU trademark paper application is EUR 1.000 and for an electronic application EUR 850. The fee includes one class of goods and services. The fee for the second class is EUR 50, and the fee for each exceeding class is EUR 150. EU trademark applications can from now on only be sent directly to the EUIPO – not via local registration offices. National trademark application and other fees vary among member states.

The regulation is directly applicable, to most parts, while member states will have three years to implement the directive.


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